The AI Endgame in IP
Judge Plager wrote, in a 2018 Federal Circuit Dissent1):
“Today we are called upon to decide the fate of some inventor’s efforts, whether for good or ill, on the basis of criteria that provide no insight into whether the invention is good or ill. Given the current state of the law regarding what inventions are patent eligible, and in light of our governing precedents, I concur . . . even though the state of the law is such as to give little confidence that the outcome is necessarily correct.”
In another decision2), The Federal Circuit unanimously concluded:
“We agree . . . that the district court clearly abused its discretion in evaluating [defendant’s] transfer motion and denying transfer.”
Justice Scalia, in a dissent3), famously declared:
“It follows, as night follows the day, that only valid patents can be infringed. To talk of infringing an invalid patent is to talk nonsense.”
These examples hint at the challenges we face as humans in establishing clear and consistent rules for creating and enforcing patented intellectual property. When judges themselves express frustrations with the state of the law, it’s worth considering whether there might be a better way.
I am a big fan of British science fiction author, Neal Asher. In his books, Asher imagines a far-flung future wherein virtually all of humanity is ruled by artificial intelligences. Being non-human, the AIs of Asher’s novels lack avarice, prejudice, and cowardice. They are imperfect, but far more perfect than humans, and far more capable of ruling. Humanity flourishes under the AIs’ rule (but of course there are dissenting factions–and therein lies some great plot lines).
Patent judges, attorneys, and examiners, being human, are undeniably fallible. Modern patent law and modern technology have both become incredibly complex creating expensive litigations that are ripe for abuse by bad-faith actors. What if we could apply AI technology to this system to bring down these costs and at the same time improve fairness and consistency?
Federal Circuit 2024 in Review
| Cross-posted from PatentBlurb.com. |
In 2024, the Federal Circuit issued eighteen opinions labeled “precedential” that were related to patent law. Quotations below omit citations and internal quotations. Here is a break-down:
A Thought Experiment: Is taking a pill 'abstract'?
Or alternatively: Is swallowing a pill like the manufacture of an axle?
Consider U.S. Patent 3,418,999, granted in 1968.
The representative claim is to:
1. The method of swallowing a pill by a human subject which comprises the steps of taking a single swallowable amount of a liquid in the mouth together with a pill having a density in the range from about 0.4 to about 0.95, and a volume in the range from about 0.2 cubic centimeters to about 1.7 cubic centimeters, as shown by the shaded area 50 of FIGURE 3, then bowing the head downwardly and forwardly while retaining said liquid and pill in the mouth, and then swallowing same while the head is held in said downwardly bowed position.
Translating: If the pill floats, bow your head forward when swallowing. This allows the pill to float up to the back of your throat making it easier to swallow.
Question: Not counting prior art, would this invention be patentable today?
Patent Law is Not Like Zen Buddhism
| Cross-posted to LinkedIn. |
Probably the most important principle in patent law is that a claim for a new invention is not patentable even though no prior art teaches every feature in the claim, so long as multiple prior art references can be combined to arrive at the claimed invention. In this case, the invention is said to be “obvious.” (At least in the United Sates; for my European friends, the invention would found “lack inventive step.”) There is an additional requirement, though, that is often missed by examiners (although they do pay lip service to it) and that is that the prior art as whole must have led a person having ordinary skill in the art to arrive at the claimed invention. In the context of patent prosecution, the burden is on the Patent Office to articulate a rationale as to why a person of ordinary skill in the art would have arrived at the claimed invention.
Fish or Cut Bait: Objective Assessment verses Data Analytics
| Originally posted May 1, 2024 on Linked-In |
When prosecuting a patent application before the U.S. Patent and Trademark Office (or other national patent office) it is common to arrive at a “fish or cut bait” moment – do you fight for the broad patent claim scope you believe you’re entitled to, or do you accept more easily obtainable narrower patent claims?